The issue here presented is whether one who combines admittedly descriptive words, i.e.,
'sugar' and 'spice,' and uses the combined terms as a trademark, may properly be refused registration
of the combined terms when applied to goods other than those which are directly described by such
words and when an association of a concept foreign to the goods is said to attach to the combined
mark. On this record, it is clear that both sugar and spice may be present as ingredients in at
least some of the bakery products to which the mark is applied. Resolution of this issue turns on
whether such a mark is 'merely descriptive' of those goods within the meaning of section 2(e)(1)
of the Trademark Act of 1946.

Appellant's application asserts use of the mark 'SUGAR & SPICE'
for 'Bakery products, in Class 46 namely, cakes, cookies, breads, rolls, donuts, pastries, crackers.'
The examiner considered the mark sought to be registered to be 'merely descriptive' of the goods.
He stated, in his final refusal to register, that:

When used on sweet bakery products, the wording
'Sugar & Spice' is considered to clearly describe goods containing sugar and spice, notwithstanding
the nursery rhyme 'Sugar and Spice and Everything Nice, etc.'

The decision in the Fleetwood Co. v. The Mitchum
Co., cited by applicant, is not considered in point here for the reason such decision
does not involve wording which constitutes the name of the ingredients of the skin cream involved.

The board affirmed that rejection, stating:

It is a matter of common knowledge that sugar and
spices are used singly and in combination in
making a wide variety of bakery products, including breakfast breads and rolls, donuts, cakes,
cookies and the like. The use of the terms 'sugar' and 'spice' in combination is but a normal use
of the English language to describe bakery products, containing sugar and spice as ingredients, and,
on the record presented in this case, we are not persuaded that 'SUGAR & SPICE' would have anything
other than a descriptive significance to the purchasers of applicant's goods.

We do not believe the rejection can stand on the basis stated. The often-cited principle embodied
in section 2(e)(1) was stated some 67 years ago by the Supreme Court in Elgin National Watch Co.
v. Illinois Watch Case Co. that a trademark:

may consist in any symbol or in any form of words,
but as its office is to point out distinctively
the origin or ownership of the articles to which it is affixed, it follows that no sign or form of
words can be appropriated as a valid trademark which from the nature of the fact conveyed by its primary
meaning, others may employ with equal truth, and with equal right, for the same purpose.

In Andrew J. McPartland, Inc. v. Montgomery Ward & Co., Inc., this court noted that
it was not the purpose of Congress, by the language of section 2(e) of the Trademark Act of 1946, to
provide for the registration of trademarks which are merely descriptive of the character or quality
of the goods upon which they are used, placing reliance on the statement of the Supreme Court
in Beckwith's Estate v. Commissioner of Patents:

It was settled long prior to the Trade-Mark Registration
Act (of 1905) that the law would not
secure to any person the exclusive use of a trade-mark consisting merely of words descriptive of
the qualities, ingredients or characteristics of an article of trade; this for the reason that the
function of a trade-mark is to point distinctively, either by its own meaning or by association, to
the origin or ownership of the wares to which it is applied, and words merely descriptive of
qualities, ingredients or characteristics, when used alone, do not do this. Other like goods, equal
to them in all respects may be manufactured or dealt in by others, who, with equal truth, may use,
and must be left free to use, the same language of description in placing their goods before the public.

Thus, a mark which merely denotes the ingredients, quality or composition of an article is not
capable of being exclusively adopted and used as a trademark since, for policy reasons, descriptive
words must be left free for public use. On the other hand, a legal distinction, albeit often
obscure, has been drawn between terms that are not merely descriptive, but rather are only suggestive
of the goods. [Footnote: As Judge Learned Hand stated in Franklin
Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., deciding whether 'Fashion-knit' for neckties
or knitted cloths of fabrics was merely descriptive of those goods: "It is quite impossible to get any
rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and
description begins."]

One of the tests to determine whether a given mark is 'merely descriptive' under the Act is based
upon what it would mean to the potential consumer when applied to applicant's goods. To make this test
meaningful, it is necessary, therefore, to consider the established usages and associations which
inhere in the words 'sugar' and 'spice' independently and then to compare them with the associations
of the composite mark 'SUGAR & SPICE' for which registration is sought.

It is appellant's position that:

The mark 'SUGAR & SPICE' immediately and automatically
recalls to mind 'sugar and spice and
everything nice' from the well known nursery rhyme. The second portion of that phrase follows the
first as the night follows the day. The association is inescapable. The pleasant connotation of those
words, familiar to most of us since early childhood, is the first and paramount impression evoked by
this mark. Appellant employs this favorable suggestion in a distinctive trademark usage.

As above noted, the board decided that "The use of the terms 'sugar' and 'spice' in combination
is but a normal use of the English language to describe bakery products."

While appellant admits that the individual words 'sugar' and 'spice' are generic terms which
have ordinary meanings which describe the commodities 'sugar' and 'spice,' when used alone,
appellant argues that the combination of two descriptive terms into an arbitrary or fanciful word
or phrase may convert those words into a distinctive mark. He adds that this may be true even in those cases where the words thus
combined are, prior to combination, descriptive of an ingredient, component or function of the goods
to which the mark is applied.

Whether a trademark is 'reminiscent or suggestive' of something more than the character, quality
or ingredients of the goods may also depend on factors considered in Blisscraft of Hollywood v.
United Plastics Co., where the mark 'POLY PITCHER' was held not to be 'merely
descriptive' of polyethylene pitchers. One of the reasons stated was:

Moreover, 'Poly Pitcher' is reminiscent or suggestive
of Molly Pitcher of Revolutionary time. As used, it is an incongruous expression, and has the
characteristics of a coined or fanciful mark.

In a similar vein is Ex parte Barker, wherein the Assistant Commissioner
considered a refusal to register on the Principal Register the mark 'CHERRY-BERRY-BING' applied to
'fruit and berry preserves.' While the issue there considered was whether 'CHERRY-BERRY-BING' was
'capable of functioning as a trademark to distinguish applicant's goods in commerce,' the words
were considered by the examiner to be 'generic and merely indicative of the principal ingredients
of applicant's goods.' There, it was held that:

While it may be true that each of the individual words
in the present applicant's mark are
generic and thus independently unregistrable, it seems to me that their unusual association or
arrangement in the applicant's mark results in a unique and catchy expression which does not, without
some analysis and rearrangement of its components suggest the contents of applicant's goods. I am
constrained to disagree with the examiner's holding in the present case that the applicant's mark
is incapable of functioning as a trade mark to distinguish the applicant's goods in commerce.

The board in In re De-Raef Corp., in considering the mark 'CULTURED'
for pancake mix made from a list of ingredients including 'defatted cultured milk powder,' reversed the
examiner, and made the observation pertinent here that:

Applicant, however, does not sell milk, cultured milk,
or powdered cultured milk. It sells pancake
mix, and the pancake mix has been neither exposed to nor treated by any bacillus culture of any kind.
'CULTURED' is not merely descriptive of applicant's pancake mix. It is a term which may suggest to
some purchasers that cultured milk is used as an ingredient of the product, but it may not have any such
suggestive significance to a substantial segment of the average purchasers of the product.

We are cognizant of the usual practice of selling baked goods in stores which also sell sugar and
spices as individual commodities. As appellant concedes, the terms 'sugar' and 'spice' used individually
are well known and well understood by the purchasing public. However, when combined and used on bakery
goods, we think they may function as an indication of more than a mere description of the ingredients of
the goods on which the mark is used and, on the record made below, are not 'merely descriptive' of such
goods within the meaning of section 2. On the record below, the mark clearly does not tell the potential
purchaser only what the goods are, their function, their characteristics or their use, or, of prime
concern here, their ingredients.

The immediate impression evoked by the mark may well be to stimulate an association of 'sugar and
spice' with 'everything nice.' (FN7) As such, on the record below, the mark, along with the favorable
suggestion which it may evoke, seems to us clearly to function in the trademark sense and not as a term
merely descriptive of goods. To the extent that the nursery rhyme is familiar to one seeing or hearing
the mark, his recall is undoubtedly stimulated to make the association with 'everything nice' but this
in no way defeats the distinctive nature of the composite word mark as applied to the listed products.

Nor do we find that the decisions cited by the solicitor as pertinent here require a different result.
In each of the cited cases, General Baking Co. v. Grocers' Baking Co.
('SUNSHINE VITAMIN D' applied to bread containing Vitamin D); Quaker Oats Co. v. General Mills,
Inc. ('OATIES' applied to oat cereal); Skinner Mfg. Co. v. General Foods Sales Co.
('RAISIN BRAN' applied to cereal); William Wrigley, Jr., Co. v. Grove Co. ('SPEARMINT' applied
to chewing gum); we think that the marks there in issue were devoid
of the reminiscent, suggestive or associative connotation which we here find to be persuasive as
presented on the record below.

Thus, on the present record, the decision of the Trademark Trial and Appeal Board must be reversed.

7. See Dollcraft Co. v. Nancy Ann Storybook Dolls, Inc., 94 F.Supp. 1, 88 USPQ 18
(S.D. Cal. 1950) aff'd, Nancy Ann Storybook Dolls, Inc. v. Dollcraft Co., 197 F.2d 293, 94 USPQ 290 (9th Cir.
1952) where the mark 'sugar and Spice' on dolls was considered to be capable of distinguishing appellant's goods
from the goods of another and to function to identify origin of the goods. There the district court stated:

'Sugar and Spice' is a phrase abstracted from an
old, familiar nursery rhyme, possessing a meaning in its context, but none when used as the meaning
of a doll. (BACK)

Prepared by Jefferson Scher for Law 227: Trademarks & Unfair Competition, Summer 2006.
Most citations have been, and other portions of the original
opinion may have been, omitted.